No. 17-1229
`
`in the
`Supreme Court of the United States
`
`HELSINN HEALTHCARE S.A.,
`
`Petitioner,
`
`v.
`
`TEVA PHARMACEUTICALS USA, INC., et al.,
`
`Respondents.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the federal CirCUit
`
`BRIEF FOR SPCM S.A. AND
`HIGH TECH INVENTORS ALLIANCE AS
`AMICI CURIAE SUPPORTING RESPONDENTS
`
`James W. Dabney
`Counsel of Record
`Khue V. hoang
`RichaRD m. Koehl
`emma l. baRatta
`stefanie m. lopatKin
`hughes hubbaRD & ReeD llp
`One Battery Park Plaza
`New York, New York 10004
`(212) 837-6000
`james.dabney@hugheshubbard.com
`
`John f. Duffy
`hughes hubbaRD & ReeD llp
`1775 I Street, N.W.
`Washington, D.C. 20006
`(202) 721-4600
`
`Counsel for Amici Curiae
`
`October 16, 2018
`284164
`
`
`
`in the
`Supreme Court of the United States
`
`HELSINN HEALTHCARE S.A.,
`
`Petitioner,
`
`v.
`
`TEVA PHARMACEUTICALS USA, INC., et al.,
`
`Respondents.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the federal CirCUit
`
`BRIEF FOR SPCM S.A. AND
`HIGH TECH INVENTORS ALLIANCE AS
`AMICI CURIAE SUPPORTING RESPONDENTS
`
`James W. Dabney
`Counsel of Record
`Khue V. hoang
`RichaRD m. Koehl
`emma l. baRatta
`stefanie m. lopatKin
`hughes hubbaRD & ReeD llp
`One Battery Park Plaza
`New York, New York 10004
`(212) 837-6000
`james.dabney@hugheshubbard.com
`
`John f. Duffy
`hughes hubbaRD & ReeD llp
`1775 I Street, N.W.
`Washington, D.C. 20006
`(202) 721-4600
`
`Counsel for Amici Curiae
`
`October 16, 2018
`284164
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES .......................................... iii
`
`INTEREST OF AMICI CURIAE .................................... 1
`
`SUMMARY OF THE ARGUMENT ................................ 2
`
`I.
`
`35 U.S.C. § 101 AND THIS COURT’S
`PRECEDENTS LIMIT PATENT-
`ELIGIBILITY TO “NEW”
`TECHNOLOGIES. ............................................... 5
`
`A.
`
`U.S. Patent Law and Policy Has
`Long Authorized Patent Grants
`Only for “New” Claimed Inventions. ......... 6
`
`B.
`
`1. This Court Has Construed “on Sale”
`Expansively and as Time-Based. ......... 8
`
`2. AIA Carried Forward “on Sale” as a
`Criterion Defining “New” or Novelty. .. 9
`
`This Court’s Precedents Have Long
`Interpreted 35 U.S.C. § 102 and Its
`Predecessor Statutes as Enforcing
`the Overarching Policy of Limiting
`Patent Protection to Subject Matter
`That Is Actually “New.” ........................... 11
`
`C.
`
`Petitioner’s Position Would
`Dramatically Undermine the On-
`Sale Category of Prior Art. ...................... 16
`
`
`
`i
`
`
`
`
`
`II. THE GOVERNMENT’S PROPOSED
`INTERPRETATION OF “AVAILABLE TO
`THE PUBLIC” CONFLICTS WITH
`APPLICABLE PRECEDENTS OF THIS
`COURT. .............................................................. 17
`
`III. THE AIA’S ADDITION OF A NEW
`CATEGORY OF PRIOR ART DID NOT
`CONSTRICT THE PRE-EXISTING
`CATEGORIES OF PRIOR ART. ........................ 21
`
`A.
`
`B.
`
`C.
`
`Petitioner’s Interpretation of
`§ 102(a)(1) Violates Multiple
`“Stabilizing Canons” of Statutory
`Construction. ............................................ 22
`
`Petitioner’s Interpretation Is
`Semantically Implausible. ....................... 23
`
`Petitioner’s Interpretation Is
`Contextually Implausible. ....................... 26
`
`IV. PETITIONER’S INTERPRETATION OF
`THE AIA RAISES A SERIOUS
`CONSTITUTIONAL QUESTION. .................... 30
`
`CONCLUSION .............................................................. 35
`
`
`
`ii
`
`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Andrews v. Hovey,
`123 U.S. 267 (1887) .................................................... 9
`
`Bedford v. Hunt,
`3 F. Cas. 37 (C.C.D. Mass. 1817)
`(Story, J.) ................................................ 14, 15, 17, 19
`
`Bonito Boats, Inc. v. Thunder Craft Boats,
`Inc.,
`489 U.S. 141 (1989) ...................................... 15, 28, 30
`
`Bragdon v. Abbott,
`524 U.S. 624 (1998) .................................................. 22
`
`Brush v. Condit,
`132 U.S. 39 (1889) ........................................ 13, 18, 19
`
`Coffin v. Ogden,
`85 U.S. (18 Wall.) 120 (1874) ........................... passim
`
`Consolidated Fruit-Jar Co. v. Wright,
`94 U.S. 92 (1877) ...................................................... 17
`
`Corona Cord Tire Co. v. Dovan Chem.
`Corp.,
`276 U.S. 358 (1928) ...................................... 13, 14, 19
`
`Deepsouth Packing Co. v. Laitram Corp.,
`406 U.S. 518 (1972) .................................................. 18
`
`Diamond v. Diehr,
`450 U.S. 175 (1981) ................................................ 2, 7
`
`iii
`
`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`Cont’d
`
`Page(s)
`
`Eldred v. Ashcroft,
`537 U.S. 186 (2003) ............................................ 33, 34
`
`Epic Sys. Corp. v. Lewis,
`138 S. Ct. 1612 (2018) ........................................ 16, 17
`
`Gayler v. Wilder,
`51 U.S. (10 How.) 477 (1851) ........................... passim
`
`Golan v. Holder,
`565 U.S. 302 (2012) ...................................... 30, 33, 34
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................ 30, 33
`
`Hall v. Macneale,
`107 U.S. 90 (1883) .................................................... 13
`
`Montclair v. Ramsdell,
`107 U.S. 147 (1883) .................................................. 26
`
`Parker v. Flook,
`437 U.S. 584 (1978) .................................................. 18
`
`Pfaff v. Wells Electronics, Inc.,
`525 U.S. 55 (1998) ............................................ passim
`
`Price v. Forrest,
`173 U.S. 410 (1899) .................................................... 8
`
`Reiter v. Sonotone Corp.,
`442 U.S. 330 (1979) .................................................. 24
`
`iv
`
`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`Cont’d
`
`Page(s)
`
`Scott Paper Co. v. Marcalus Mfg. Co.,
`326 U.S. 249 (1945) .................................................. 10
`
`Smith v. Hall,
`301 U.S. 216 (1937) ............................................ 12, 19
`
`TC Heartland LLC v. Kraft Foods Group
`Brands LLC,
`137 S. Ct. 1514 (2017) ........................................ 22, 23
`
`United States v. Fisher,
`6 U.S. 358 (1805) (Marshall, J.) ................................ 7
`
`United States v. Menasche,
`348 U.S. 528 (1955) .................................................. 26
`
`United States v. United Verde Copper Co.,
`196 U.S. 207 (1905) ............................................ 29, 30
`
`Whitman v. Am. Trucking Assns., Inc.,
`531 U.S. 457 (2001) .................................................. 17
`
`Statutes and Rules
`
`35 U.S.C. § 31 (1934) ..................................................... 12
`
`35 U.S.C. § 101 ...................................................... passim
`
`35 U.S.C. § 102 ...................................................... passim
`
`35 U.S.C. § 102(a) .................................................. passim
`
`v
`
`
`
`
`
`TABLE OF AUTHORITIES
`Cont’d
`
`Statutes and Rules
`
`Page(s)
`
`35 U.S.C. § 102(a)(1) ............................................. passim
`
`35 U.S.C. §102(b) ..................................................... 15, 28
`
`35 U.S.C. § 102(b)(1) ..................................................... 10
`
`Leahy–Smith America Invents Act, § 3(n),
`125 Stat. 284 ...................................................... 31, 32
`
`Regulations
`
`37 C.F.R. § 1.53(b)(2) ..................................................... 32
`
`Other Authorities
`
`Antonin Scalia & Bryan A. Garner,
`Reading Law (2012) ................................................. 22
`
`Webster’s New Int’l Dictionary (1961) ......................... 25
`
`
`
`vi
`
`
`
`
`
`INTEREST OF AMICI CURIAE
`
`SPCM S.A. and related companies (“SNF”) are lead-
`ing developers, manufacturers, and marketers of water-
`soluble polymers (see http://www.snf-group.com/).1 SNF
`products are used in diverse fields including drinking
`water production, wastewater treatment, sludge de-
`watering, oil and gas extraction, mining, agriculture,
`and the manufacture of paper, textiles, and cosmetic
`preparations. SPCM S.A. holds dozens of United States
`patents and pending patent applications.
`
`The High Tech Inventors Alliance (“HTIA”) is dedi-
`cated to advancing a patent system that promotes and
`protects real investments in technologies and American
`jobs.2 Collectively, HTIA’s members employ nearly
`500,000 U.S. employees, spent $63 billion last year
`alone on research and development, and hold more
`than 115,000 U.S. patents.
`
`As industrial firms selling real products embodying
`important technologies, SPCM S.A. and HTIA are vital-
`ly interested in when a claimed invention is rightly
`deemed “new” (35 U.S.C. § 101) and thus eligible for
`patent protection. Petitioner is effectively urging this
`Court to adopt a radical new concept of “new” that con-
`flicts with the settled understanding of the term.
`
`
`1 No counsel for a party authored this brief in whole or in part and
`no party or counsel for a party made any monetary contribution
`intended to fund preparing or submitting this brief.
`
`2 HTIA is described at https://www.hightechinventors.com/. The
`eight HTIA members are Adobe, Amazon, Cisco, Dell, Google, In-
`tel, Oracle, and Salesforce.
`
`
`
`1
`
`
`
`
`
`SUMMARY OF THE ARGUMENT
`
`Section 101 of the Patent Act codifies a simple, intu-
`itive, and longstanding policy of U.S. patent law: Pa-
`tents are generally available only for “new” technolo-
`gies. 35 U.S.C. § 101. For more than half a century, the
`precise details of what constitutes a “new” invention
`have been codified in § 102 of the Patent Act. 35 U.S.C.
`§ 102. As this Court noted in Diamond v. Diehr, 450
`U.S. 175 (1981), § 102 is “in effect, an amplification and
`definition of ‘new’ in section 101.” Id. at 191 (quoting S.
`Rep. No. 82-1979, at 6 (1952)). Consistent with the Pa-
`tent Act’s overarching policy of limiting patents to
`“new” technologies, this Court has long interpreted the
`Patent Act’s detailed definitions of prior art broadly so
`that patents may not be granted to technologies that
`are fundamentally not “new.”
`
`Petitioner’s argument in this case is that the addi-
`tion of a new residual category of prior art to § 102 in
`2011—expanding the prior art to include technologies
`that are “otherwise available to the public”—worked a
`wholesale revolution in patent law by subtracting sub-
`stantially from preexisting categories of prior art. Un-
`der Petitioner’s argument, technologies that have been
`“on sale” for years or even decades would now suddenly
`be patent-eligible if sellers of products or processes em-
`bodying such old technologies included non-disclosure
`provisions in private terms of sale.
`
`As detailed in Part I of this brief, Petitioner’s argu-
`ment goes against more than 170 years of this Court’s
`precedents, which have consistently interpreted the Pa-
`tent Act’s prior art categories broadly. It is telling that
`neither Petitioner nor the Government cites a single
`precedent of this Court that excluded old technology
`
`2
`
`
`
`
`from any category of prior art on the basis that the
`terms of a commercial sale included a non-disclosure
`provision.
`
`As shown in Part II, the Government has proposed a
`highly revisionist, vague, and dispute-inviting interpre-
`tation of “available to the public” which conflicts both
`with the most natural meaning of the statutory text
`when viewed in historical context and with the usage of
`the phrase by this Court in its applicable precedent.
`The Government’s proposed interpretation of “available
`to the public” would drastically contract the “on sale”
`category of prior art and subvert long-established pa-
`tent law and policy, which restricts patent grants to
`claimed inventions that are “new.” 35 U.S.C. § 101.
`
`As shown in Part III, beside contravening the basic
`patent policy codified in § 101 of the Patent Act and re-
`flected in precedents of this Court, Petitioner’s pro-
`posed construction of amended § 102(a)(1) also violates
`multiple canons of statutory interpretation. To accept
`Petitioner’s argument, this Court would have to believe
`that Congress:
`
`1. Attempted to change this Court’s construction of
`the “on sale” category of prior art by reenacting that
`exact statutory phrase;
`
`2. Attempted to change the meaning of that reen-
`acted statutory phrase by adopting a related but not
`utterly inconsistent provision elsewhere in the stat-
`ute;
`
`3. Attempted to subtract from the reenacted catego-
`ry of prior art by adding a new category of prior art;
`
`4. Attempted to rely on the disjunctive word “or” be-
`tween the phrases “on sale” and “available to the
`
`3
`
`
`
`
`
`public” as a means of communicating the conjunc-
`tive, so that the reenacted version of “on sale” prior
`art would be interpreted to mean that the prior art
`must be both “on sale” (under the traditional mean-
`ing of that phrase) and “available to the public”
`(under some undefined and restrictive meaning);
`
`5. Attempted to rely on the adverb “otherwise” as a
`signal that all statutory categories of prior art
`should be subject to the same standard of being
`“available to the public” even though the word “dif-
`ferent” is included in prominent definitions of “oth-
`erwise”;
`
`6. Attempted to narrow preexisting categories of
`prior art to the point of rendering them superfluous
`to the operation of the statute; and
`
`7. Attempted to use the phrase “available to the
`public” to signal an ahistorical and dramatically re-
`strictive approach to prior art even though this
`Court’s precedents suggest that the phrase should
`be construed broadly.
`
`Each of these steps violates specific canons of statutory
`construction, basic common sense, or both. Collectively,
`they make Petitioner’s interpretation of § 102(a)(1)
`wholly implausible.
`
`Finally, as discussed in Part IV, Petitioner’s im-
`plausible interpretation of § 102(a)(1) should also be
`disfavored because it raises a serious constitutional is-
`sue concerning the scope of congressional power to
`grant patents for subject matter that is in the public
`domain under federal patent law.
`
`Before this Court Petitioner has not disputed that
`its claimed invention was “on sale,” within the meaning
`
`4
`
`
`
`
`of pre-AIA § 102 and its statutory predecessors, more
`than one year before the date when it filed its priority
`patent application (i.e., January 30, 2003). It is, thus,
`established that at the time Petitioner filed its priority
`patent application, its claimed invention was no longer
`“new” (35 U.S.C. § 101) under then-existing patent law.
`Petitioner contends, however, that by passing the
`America Invents Act (“AIA”) in 2011, Congress pur-
`portedly authorized the granting of patents for subject
`matter that had been in the public domain, in Petition-
`er’s case, for the better part of a decade. Such an inter-
`pretation of the AIA would raise a serious constitution-
`al question concerning the scope of congressional power
`to authorize patents for public domain subject matter.
`Standard canons of statutory interpretation require re-
`jection of such an interpretation when another reason-
`able interpretation exists.
`
`I.
`
`35 U.S.C. § 101 AND THIS COURT’S PREC-
`EDENTS LIMIT PATENT-ELIGIBILITY TO
`“NEW” TECHNOLOGIES.
`
`Since 1793, United States patent statutes have ex-
`pressly limited patent-eligible subject matter to “new”
`inventions. Consistent with that explicit statement of
`an overarching policy in U.S. patent law, this Court’s
`precedents have taken a broad approach to defining the
`prior art categories that are used in evaluating the
`novelty of a claimed invention.
`
`Petitioner in this case seeks a radical departure
`from this consistent tradition. It asks the Court to re-
`move from the “on sale” category of prior art any sale
`whose terms included a non-disclosure provision that
`could be argued to make a patented article not “availa-
`ble” to a sufficient number of the right kind of third-
`
`5
`
`
`
`
`parties who might, collectively, be deemed “the public.”
`Petitioner’s argument should be rejected on multiple
`grounds, but most fundamentally, it should be rejected
`because Congress has not altered U.S. patent law and
`policy to authorize the granting of patents for old in-
`ventions whose commercial exploitation may have oc-
`curred under private contractual terms that included
`non-disclosure provisions.
`
`A.
`
`U.S. Patent Law and Policy Has Long
`Authorized Patent Grants Only for
`“New” Claimed Inventions.
`
`Section 101 of the Patent Act establishes an im-
`portant polestar for interpreting the remainder of the
`Patent Act: it authorizes the granting of patents only
`for subject matter that is “new and useful,” “subject to
`the conditions and requirements of this title.” 35 U.S.C.
`§ 101. That single sentence provides two important
`principles that, historically, have guided this Court’s
`decisions applying the novelty condition for patentabil-
`ity and should control the Court’s decision in this case.
`
`First and foremost, the word “new” in § 101 indi-
`cates the overarching congressional policy of granting
`patents only for subject matter that can, in some signif-
`icant and meaningful sense, be described as “new.” The
`limiting of patent grants to “new” subject matter has
`been present in every United States patent statute en-
`acted for more than two centuries. The 1793 Patent
`Act, which was quite possibly drafted by Thomas Jef-
`ferson himself, began this long tradition by stating in
`its very first section that patents were available for
`“any new and useful art, machine, manufacture or
`composition of matter, or any new and useful improve-
`ment on any art, machine, manufacture or composition
`
`6
`
`
`
`
`of matter.” Act of Feb. 21, 1793, ch. 11, § 1, 1 Stat. 318,
`319 (emphasis added). Since then, the phrase “new and
`useful” has been reenacted each and every time that
`Congress has made a general revision or recodification
`of U.S. patent law. See Act of July 4, 1836, ch. 357, § 6,
`5 Stat. 117, 119; Act of July 8, 1870, ch. 230, § 24, 16
`Stat. 198, 201; 35 U.S.C. § 101 (1952).
`
`A second and equally important point is that the
`statutory sentence in § 101 also makes the availability
`of patent protection “subject to the conditions and re-
`quirements” of the remainder of the Patent Act (title
`35). Thus, the text of § 101 expressly ties together the
`general policy of limiting patents to the “new” with the
`more detailed “conditions and requirements” found
`elsewhere in the Patent Act.
`
`With respect to the concept of novelty, for more than
`sixty years, the statutory definition of when a claimed
`invention is “new” has been codified in 35 U.S.C. § 102.
`In Diehr, this Court stated that 35 U.S.C. § 102 is “in
`effect, an amplification and definition of ‘new’ in section
`101.” 450 U.S. at 191 (quoting S. Rep. No. 82-1979, at 6
`(1952), as reprinted in U.S.C.C.A.N. 2394, 2399).
`
`This case involves the interpretation of some of the
`details of novelty analysis that are codified in § 102,
`but any interpretation of those details should not un-
`dermine the fundamental policy of limiting patent
`grants to subject matter that is “new.” Rather, inter-
`pretation of the details should be consonant and har-
`monious with the fundamental policy that is expressly
`set forth in § 101. See United States v. Fisher, 6 U.S.
`358, 405 (1805) (Marshall, J.) (preferring a statutory
`construction that “renders the law uniform throughout,
`and consistent with what it professes in every other
`
`7
`
`
`
`
`section”); see also Price v. Forrest, 173 U.S. 410, 427
`(1899) (holding that even a statutory “preamble may be
`referred to in order to assist in ascertaining the intent
`and meaning of a statute fairly susceptible of different
`constructions”).
`
`1. This Court Has Construed “on Sale”
`Expansively and as Time-Based.
`
`The particular part of § 102 at issue in this case is
`the “on sale” category of prior art, which dates back to
`patent statutes enacted in 1836 and 1839. The 1836
`Patent Act provided that patents could not be granted
`for subject matter that was (i) “known or used by others
`before” the date of invention, or (ii) “in public use or on
`sale, with [the inventor’s] consent or allowance” at the
`time of the patent application. Act of July 4, 1836, ch.
`357, § 6, 5 Stat. 117, 119.
`
`The 1836 Act thus defined and measured novelty at
`two different times. At the time of invention, the al-
`leged invention had to be new in the sense that it was
`“not known or used by others.” At the time of patent
`application (which would generally be later than the
`time of invention), the alleged invention still had to be
`new in the sense that it could not be “in public use or
`on sale” with the inventor’s consent.
`
`In 1839, Congress redefined patent-eligibility in two
`ways. First, a two-year grace period was allowed so
`that an alleged invention could still be patented where
`any “purchase, sale, or prior use” was not “more than
`two years prior to such application for a patent.” Act of
`Mar. 3, 1839, ch. 88, § 7, 5 Stat. 353, 354. Second, the
`1839 Act provided that a sale made more than two
`years prior to a patent’s filing date negated novelty ir-
`
`8
`
`
`
`
`respective of a putative patentee’s “consent or allow-
`ance” with respect to the sale.
`
`Thus, after the 1839 Act, the “on sale” category had
`a two-year grace period but applied to sales activity of
`anyone, not just a putative patentee. As this Court con-
`strued the 1839 Act, “[t]he evident purpose of the sec-
`tion was to fix a period of limitation which should be
`certain, and require only a calculation of time, and
`should not depend upon the uncertain question of
`whether the applicant had consented to or allowed the
`sale or use.” Andrews v. Hovey, 123 U.S. 267, 274
`(1887).
`
`Although the statutory grace period was shortened
`from two years to one in 1939, see Act of Aug. 5, 1939,
`ch. 450, 53 Stat. 1212, the basic contours of the “on
`sale” category of prior art have not been substantially
`changed since this Court’s decision in Andrews. In Pfaff
`v. Wells Electronics, Inc., 525 U.S. 55 (1998), the Court
`held that “on sale” encompasses offering to supply a
`product whose design is known, even if no physical em-
`bodiment of the product exists at the time of the offer.
`Id. at 58–59, 68-69. Petitioner has not disputed that
`the traditional understanding of “on sale” encompasses
`the sale transactions which the Court of Appeals held
`invalidated three pre-AIA patents held by Petitioner.
`
`2. AIA Carried Forward “on Sale” as a
`Criterion Defining “New” or Novelty.
`
`As amended in 2011, 35 U.S.C. § 102 excludes from
`patent-eligibility any claimed invention that was,
`among other things, “in public use, on sale, or other-
`wise available to the public before the effective filing
`date of the claimed invention.” The AIA thus expressly
`
`9
`
`
`
`
`carried forward the “on sale” prior art category in
`§ 102. By statutory definition, a claimed invention
`ceases to be “new” (35 U.S.C. § 101) no later than one
`year after it is placed “on sale.” 35 U.S.C. § 102(a)(1);
`see also 35 U.S.C. § 102(b)(1) (excluding from consider-
`ation some prior art that arises “1 year or less before” a
`patent application’s effective filing date).
`
`Nothing in the phrase “on sale” excludes offers in
`which a commercial buyer agrees to exploit licensed
`technology in a certain manner, such as maintaining
`the confidentiality of technology so as to maximize the
`patentee’s profit from the claimed invention’s commer-
`cial exploitation. The idea that such a private agree-
`ment could impair public rights to practice old technol-
`ogies is antithetical to this Court’s treatment of similar
`agreements. Cf. Scott Paper Co. v. Marcalus Mfg. Co.,
`326 U.S. 249, 257 (1945) (holding that a contract could
`not restrict a party's right to make use of an invention
`that had fallen into the public domain because such a
`private agreement cannot be used as “the means of suc-
`cessfully avoiding the requirements of legislation en-
`acted for the protection of a public interest”).
`
`Against this background of long continuity, Peti-
`tioner argues that Congress’s addition of a new catego-
`ry of prior art in § 102(a)(1)—art that is “otherwise
`available to the public”—effected a revolutionary
`change in the law. According to Petitioner, this new
`language modifies “on sale” so that it excludes sales
`whose terms of sale include non-disclosure provisions
`and does so even where, as in this case, a sale admit-
`tedly would have negated novelty under Pfaff and other
`pre-AIA decisions construing the “on sale” category.
`
`10
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`There are many problems with Petitioner’s argu-
`ment, including that it requires this Court to find a
`negative implication in the single word “otherwise” that
`overturns settled meanings of previously interpreted
`phrases in the statute. But the overarching point is
`that, under Petitioner’s interpretation, technology em-
`bodied in products on sale for decades could be exclud-
`ed from the prior art to a patent if sellers and licensors
`merely included non-disclosure provisions in their sale
`terms. Petitioner’s proposed interpretation of § 102
`would make the old patentable, in direct contravention
`of the “new” limit codified in § 101 of the Patent Act,
`and in a manner dramatically inconsistent with the
`approach that this Court has long taken in generously
`construing prior art categories.
`
`B.
`
`This Court’s Precedents Have Long
`Interpreted 35 U.S.C. § 102 and Its
`Predecessor Statutes as Enforcing the
`Overarching Policy of Limiting Pa-
`tent Protection to Subject Matter
`That Is Actually “New.”
`
`As noted above, the word “new” has been an express
`limit on patent-eligibility in every patent statute dating
`back to 1793. And in a long and unbroken line of deci-
`sions dating back to at least 1851, this Court has rigor-
`ously enforced the novelty condition for patentability as
`excluding subject matter that was not substantially
`“new,” either because the claimed invention was old at
`the time of invention due to another’s work or, as in
`this case, because the claimed invention was too old
`when the patent application was filed due to the lapse
`of a statutory period for filing a patent application.
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`In Pfaff, the patent-in-suit disclosed and claimed a
`computer chip socket comprising several features. The
`asserted claims encompassed a computer chip socket
`that the patentee had offered to supply to a single cus-
`tomer more than one year before the patent’s priority
`date. 525 U.S. at 58–59. This Court held the asserted
`claims invalid “because the invention had been on sale
`for more than one year in this country before he filed
`his patent application.” Id. at 68–69. Pfaff is thus a
`case prescribing when a sale event creates patent-
`defeating prior art. As in this case, Pfaff’s own work en-
`tered the public domain one year after his placing the
`invention “on sale,” and thus his invention was not
`“new” under the specific statutory test in § 102 by the
`time he sought a patent.
`
`In Smith v. Hall, 301 U.S. 216 (1937), the patent-in-
`suit disclosed and claimed a method for staged incuba-
`tion of eggs. The asserted claims encompassed a staged
`egg incubation method that a single individual, one Mi-
`lo Hastings, had known and used before the patentee’s
`inventive work. The Court held that this one person’s
`prior knowledge and use was sufficient to invalidate
`the patent. “It is enough,” the Court held, “if he [Has-
`tings] knew and used the method with operative suc-
`cess.” Id. at 226–27. “He [Hastings] knew the method
`and used it in a device capable of employing it.” Id. at
`233. The claims were invalid as encompassing subject
`matter that was “known or used by others in this coun-
`try, before his invention or discovery thereof.” Id. (quot-
`ing 35 U.S.C. § 31 (1934)). The claimed Smith invention
`was not “new” under the then-existing statutory test of
`novelty.
`
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`In Corona Cord Tire Co. v. Dovan Chemical Corp.,
`276 U.S. 358 (1928), the patent-in-suit disclosed and
`claimed a process of treating rubber or similar com-
`pounds which comprised use of an accelerator called
`diphenylguanidine (“D.P.G.”). Id. at 366–68. The as-
`serted claims encompassed a method that a single indi-
`vidual, one George Kratz, had discovered and success-
`fully performed within his then-firm before the patent-
`ee’s work. Id. at 382–83. This Court reversed a judg-
`ment of infringement on the basis that “the first dis-
`covery that D.P.G. was a useful accelerator of the vul-
`canization of rubber was made by George Kratz and not
`by Weiss.” Id. at 385. The claimed Weiss invention was
`not “new” under the then-existing statutory test of nov-
`elty.
`
`In Brush v. Condit, 132 U.S. 39 (1889), the patent-
`in-suit disclosed and claimed an improved electric
`lamp. The asserted claims encompassed a pre-existing
`lamp that a single individual, one Hayes, had previous-
`ly made and that a single firm had used in mill opera-
`tions for a period of months. Id. at 44–49. This Court
`affirmed a judgment holding the asserted claims inva-
`lid in view of the prior Hayes lamp. Id. at 49–50. The
`prior use was of a “public, well-known, practical use in
`ordinary work.” Id. at 48. It was irrelevant that “the
`mechanism of the Hayes clutch was concealed from
`view,” for its design was known to the workmen who
`installed it. Id. at 49 (quoting Hall v. Macneale, 107
`U.S. 90, 97 (1883)). The claimed Brush invention was
`not “new” under the then-existing statutory test of nov-
`elty.
`
`In Coffin v. Ogden, 85 U.S. (18 Wall.) 120 (1874),
`the patent-in-suit disclosed and claimed a reversible
`
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`latch mechanism made by one Kirkham. Id. at 121–22.
`The asserted claims encompassed a reversible latch
`mechanism that a single individual, one Erbe, had pre-
`viously made and that a single firm had installed and
`used in an interior door. Id. at 121–24. The patentee
`argued that this prior knowledge was not “available” to
`him (id. at 121) and so should not be patent-defeating,
`but this Court disagreed, holding: “The prior knowledge
`and use by a single person is sufficient. The number is
`immaterial.” Id. at 124–25. The claimed Kirkham in-
`vention was not “new” under the then-existing statuto-
`ry test of novelty.
`
`In holding that “prior knowledge and use by a single
`person is sufficient” to establish that a claimed inven-
`tion was not “new,” the Coffin decision cited and fol-
`lowed Bedford v. Hunt, 3 F. Cas. 37 (C.C.D. Mass.
`1817) (No. 1,217) (Story, J.). In Bedford, the patentee
`argued, just as Petitioner does here, that pre-existing
`knowledge of a claimed invention should not defeat a
`subsequent claim of invention except where the prior
`knowledge “has been before generally known and in
`general use, among persons engaged in the art or pro-
`fession.” Id. at 38 (emphasis added). Justice Story re-
`jected this argument and held, to the contrary, that:
`“any patent may be defeated by showing, that the thing
`secured by the patent, had been discovered and put in
`actual use prior to the discovery of the patentee, how-
`ever limited the use or the knowledge of the prior dis-
`covery might have been.” Id. (emphasis added). The Cof-
`fin decision adopted Justice Story’s reading of the nov-
`elty condition, see 85 U.S. (18 Wall.) at 124–25 & n.*, as
`did this Court’s later decision in Corona Cord. See 276
`U.S. at 382–83 (prior knowledge by a single individual
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`held sufficient to invalidate a patent; Bedford cited and
`followed).
`
`Coffin also quoted with approval the reasoning of
`Gayler v. Wilder, 51 U.S. (10 How.) 477, 498 (1851).
`Gayler held that an earlier discovery, which had been
`“finally forgotten or abandoned,” was not patent-
`defeating because it was not “accessible to the public”
`(51 U.S. (10 How.) at 496–97), in the sense that in that
`situation “there was no existing and living knowledge
`of this improvement, or of its former use, at the time
`[the patentee] made the discovery.” Id. at 498 (empha-
`sis added). The jury instruction approved in Gayler fol-
`lowed the longstanding rule that a single person’s prior
`knowledge or use of a claimed invention can be patent-
`defeating. See id. (affirming instruction that if pre-
`existing fireproof safe and its mode of construction was
`“still in the memory of Conner,” the later inventor
`would not be entitled to a patent). That is, Conner’s
`knowledge alone would have been patent-defeating, if it
`had not been finally forgotten or abandoned by him.
`
`Since at least the Gayler decision, patent law has
`deemed a claimed invention “known” or “accessible to
`the public” if at least one person, other than the inven-
`tor, can legally practice the invention and thereby ena-
`ble the public to benefit from its use. 51 U.S. (10 How.)
`at 496–97; see also Bonito Boats, Inc. v. Thunder Craft
`Boats, Inc., 489 U.S. 141, 148 (1989) (characterizing
`former 35 U.S.C. §§ 102(a) and (b) (1988) as excluding
`from patent protection “knowledge that is already
`available to the public”). Respondent correctly argues
`that the new statutory language, “otherwise available
`to the public,” is not rightly treated as negating the
`long-established meaning of “on sale” in this Court’s
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`precedents (Resp. Br. 22–50); but if it were, that lan-
`guage in patent law parlance clearly encompasses
`knowledge held by a person, such as a manufacturing
`licensee or wholesale distributor,
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